from the that's-what-happens-when-you-only-ask-one-side dept

Trademark bullying is a big problem, and it's one that we regularly discuss here on the blog. It involves a trademark holder threatening and/or suing another company claiming infringement, where there's really none. It's quite effective and can have serious chilling effects. After Monster Energy Drink went after Vermonster beer for trademark infringement (yes, a trademark bullying cases that had nothing to do with one of the biggest trademark bullies, Monster Cable), Vermont Senator Patrick Leahy suddenly took an interest in trademark bullies. A report on the issue was requested, and the typically useless Commerce Department took on the task and did a ridiculous job at it. This is a commerce department that seems to think copyright, patent and trademark laws are wonderful and should only be expanded.

The worst part, however, was in the whole discussion on the "duty to police." This is an issue that is regularly raised whenever we talk about trademarks, where people claim that you have to enforce your trademark or you can lose it. As we've explained many times, that's a bastardization of what the law and case law seem to actually say. It's only true that you need to enforce it in situations where there's an actual likelihood of confusion and/or it's being used in direct competition. The tangential or totally unrelated uses don't require you to enforce. Furthermore, there are alternative actions rather than threatening or suing -- such as offering up free or cheap licenses.

Goldman's section about this "duty to police" delves in even further, and basically shows why the Commerce Dept. report is useless:

Second, the report says "a trademark is a property right that an owner has a duty to police." WHOA! Many folks would dispute the characterization of trademarks as "property"; and many folks (including me) insist that the "duty to police" is massively overstated. Later, the report says, "In view of the mark owner’s obligation to police violations, aggressive enforcement of one’s trademark rights does not automatically equate to abuse or bullying." In effect, the report says that it doesn't see any problem at all; but if there is a problem, it's just the natural consequence of that pesky duty to police....oh well, c'est la vie.

Given its apathetic nature, the report doesn't make the logical jump that any intellectually curious person would instantly make: if the "duty to police" might be driving trademark owners to be (over)zealous in their enforcement efforts, maybe we should fix the duty to police. After all, this "duty" isn't in the statute at all; it's barely in the caselaw; and it could be easily remedied with a statutory clarification that might very well be welcomed by both trademark owners and secondary trademark users because it might eliminate ambiguity plaguing both communities. C'mon, guys--that conclusion isn't exactly rocket science.

From my perspective, the "duty to police" is like the proverbial monster under a child's bed. It's not actually there, but boy, it sure seems scary. My academic writing queue is too thick right now to tackle this issue immediately, but I don't recall seeing a good comprehensive academic article grokking the duty to police (if I'm forgetting something, please let me know). That would be an excellent paper topic. I would be happy to work with someone on this project so that we can demonstrate just how massively the "duty to police" is overstated--typically as a business development tool for trademark litigators trying to afford their kids' private school tuition. Naturally, the Department of Commerce report undertook no such research effort into the trademark policing duty itself.

But what do you expect from the Commerce Department? It's really turned into nothing more than an internal lobbying arm for big business, these days. It's too bad the FTC didn't take on this particular task, as it seems like it's really more something they should cover, and at least it's a federal agency that seems to really try to understand the issues, when it comes to intellectual property.

Re:

problem is, trademarks are supposed to be a Consumer protection, but are being lumped in with IP.

seems to me that Trademarks should be one of those things where there's an authority with a list and They come down on people who are violating the trademark, after investigating if such biolation actually exists, after having a report of such. there shouldn't be an adversarial court case involved unless someone is appealing the outcome... or at least, that's what i'd think. of course, you still have regulatory capture issues, but meh *Ishrugs*